NIRMA UNIVERSITY

INSTITUTE OF TECHNOLOGY
DEPARTMENT OF MATHEMATICS AND
HUMANITIES
PROGRAMME: B.TECH(EE) SEM-V
ASSIGNMENT SUBMISSION OF CASE ANALYSIS
FOR THE SUBJECT: LAW FOR ENGINEERS
(SS562)

CASE NAME: Toyota Jidosha Kabushiki Kaisha Vs

Prius Automobile Industries

SUBMITTED BY:
Shikhar Patel(17BEE073)

Pinkal Rajput(17BEE083)

Rakesh Rajpurohit(17BEE084)

Savan Patel(17BEE085)

Harsh Rana(17BEE086)
BRIEF ESSENCE OF THE CASE

The case goes back to 2009, where Toyota, which is a car manufacturer, claimed that
Prius Auto Industries that trades with auto parts and accessories, bore the Plaintiff's
registered 'Toyota', 'Toyota Innova', 'Toyota Device' and 'Prius' Trade Marks. The
plaintiff approached the Trade Mark Registry for cancellation of registered mark of the
defendants, and also filed the suit on the ground that the defendant was using their
'well known mark' without their consent, leading to an unfair advantage of their
reputation and goodwill of the plaintiff. However, following the decade old practice,
'global reputation and prior user was upheld by the Trial court and gave the judgment
stating the Defendant liable for passing off of the Trade marks of the Plaintiff, thereby
restraining them from using the said trade marks and imposing punitive damages of
rupees ten lakhs.

However, the Division Bench of the High Court of Delhi gave a very balanced view and
held that the decision of Trial Court was acceptable as far as injunctions against the
mark Toyota, Toyota Innova' and 'Toyota Device' is concerned. Injunction against the
use of Prius by the Defendant was not justified, as the Plaintiff has to give evidence
for showing that there existed a cause of likelihood/actual confusion in the Indian
market. Thus, this part of the judgement of the Trial Court was set aside. Therefore,
the current case is an appeal filed by the Plaintiff before the Hon'ble Supreme Court
which dealt with the question whether the defendant is liable for passing off due to
the use of 'PRIUS.'

The factual matrix lie in issue that revolves around the mark 'Prius'. This was the Mark
under which the Plaintiff's first commercial hybrid car was launched in Japan as well
as in other countries since 1997. However, the Plaintiff did not get the TradeMark
"Prius" registered in India and its Prius car was introduced in India only in the year
 2009, much later than the year when the Defendant got there Trade Mark 'PRIUS'
registered in India in 2002.

FACTS AND ISSUES

The Plaintiff (Toyota Jidosha Kabushiki Kaisha) sought to prevent the Defendants (spare
parts suppliers) from using the trademark “Toyota”, “Innova” and “Prius”. The first two
marks were registered trademarks of the Plaintiff and the lower courts had no difficulty in
finding in favour of Toyota on this count. The Defendants did not contest these findings
before the Supreme Court.

The contest was only with respect to the trademark “PRIUS”, which the plaintiff claimed
belonged exclusively to it. Interestingly, the plaintiff had no trademark registration for this
mark, but the Defendant did (a registration dating back to 2002).

Toyota contested this registration by the defendants, claiming that it was the first user of
Prius (and began using this mark as early as 1997) and that the Defendants had wrongly
and dishonestly registered the same in India.

As such, the only question before the Supreme court was: Despite the defendants’
registration of Prius as a trademark, could the plaintiff still claim that they have a stronger
(passing off) claim to the said mark, being prior adopters/users of the same?

Interestingly, this case did several earlier rounds before the lower courts, and underwent a
full fledged trial before it made its way to the Supreme Court.
JUDGMENT AND ANALYSIS

Thus, the Supreme Court held that "likelihood of confusion" would be a better test of
proving a passing off action, which can only be established from evidentiary
documents, which the Appellants failed to provide. In furtherance of this, the Supreme
Court also insisted on the Trinity Test as laid down by Reckitt & Colman Products Ltd.

● The goods or services have acquired goodwill or reputation in the marketplace

that distinguishes such goods or services from competitors;
● The defendant misrepresents his goods or services, either intentionally or
unintentionally, so that the public may have the impression that the offered
goods or services are those of the claimant; and
● The claimant may suffer damages because of the misrepresentation.

These seven years of clash between the Toyota and Prius automobile company came
to an end and the Supreme Court concluded that trademark rights are territorial and
not global, thus one has to prove that one has acquired its reputation and goodwill in
a territory, only through actual evidence, thereby rejected the trademark case brought
by Toyota jidosha kabushiki kaisha.

The Hon'ble Supreme Court has reiterated the much-needed revision of foundational
basis of Trade Mark law, which has also very well described and explained the two
most important Doctrine of the Trade Mark law that helps in determining the right
owners – Universality Principle and Territoriality Doctrine. Also, Division Bench of
High Court has played a very significant role in highlighting the groundbreaking
principle and it was very consistent with its view towards the territorial aspect of the
Trade Mark law (which can be seenExide Case). Moreover, the Court Aptly relied on
Trans Tyres India Pvt. Ltd vs. Double Coin Holdings Ltd & Anr., which observed that
Universality Doctrine (which posits that a mark signifies the same source all over the
world) has not been accepted by the courts. Modern day trade; globalization have
brought in multi-channel modes of sale in the market and therefore it is the
territoriality Doctrine (trade mark being recognized as having a separate existence in
each sovereign country) would hold the field.

Thus, it is time to also look into the territorial character of the Trade Mark above the
rights of prior user and Trans-border reputation.

Reference

1.https://www.lawnn.com/ipr-supreme-court-judgment-toyota-
kabushiki-kaisha-v-prius-auto-industries